Mechanical Engineers' Handbook, 2nd ed., Edited by Myer Kutz. ISBN 0-471-13007-9 © 1998 John Wiley & Sons, Inc. 76.1 WHAT DOES IT MEAN TO OBTAIN A PATENT 2248 76.1.1 Utility, Design, and Plant Patents 2248 76.1.2 Patent Terms and Expiration 2248 76.1.3 Four Types of Applications 2249 76.1.4 Why File a Provisional Application 2249 76.1.5 Understanding That a Patent Grants a "Negative Right" 2249 76.2 WHAT CAN BE PATENTED AND BY WHOM 2250 76.2.1 Ideas, Inventions, and Patentable Inventions 2250 76.2.2 The Requirement of Statutory Subject Matter 2250 76.2.3 The Requirement of Originality of Inventorship 225 1 76.2.4 The Requirement of Novelty 2252 76.2.5 The Requirement of Utility 2253 76.2.6 The Requirement of Nonobviousness 2253 76.2.7 Statutory Bar Requirements 2254 76.3 PREPARINGTOAPPLYFOR A PATENT 2255 76.3.1 The Patentability Search 2255 76.3.2 Putting the Invention in Proper Perspective 2255 76.3.3 Preparing the Application 2256 76.3.4 Enablement, Best Mode, Description, and Distinctness Requirements 2256 76.3.5 Functional Language in Claims 2257 76.3.6 Product-by-Process Claims 2257 76.3.7 Claim Format 2257 76.3.8 Executing the Application 2258 76.3.9 Patent and Trademark Office Fees 2258 76.3.10 Small Entity Status 2259 76.3. 1 1 Express Mail Filing 2260 76.4 PROSECUTING A PENDING PATENT APPLICATION 2260 76.4.1 Patent Pending 2260 76.4.2 Secrecy of Pending Applications 2260 76.4.3 Duty of Candor 2260 76.4.4 Initial Review of an Application 2261 76.4.5 Response to an Office Action 2261 76.4.6 Reconsideration in View of the Filing of a Response 2262 76.4.7 Interviewing the Examiner 2263 76.4.8 Restriction and Election Requirements 2263 76.4.9 Double-Patenting Rejections 2263 76.4.10 Patent Issuance 2264 76.4.11 Safeguarding the Original Patent Document 2264 76.4.12 Continuation, Divisional and Continuation-in-Part Applications 2264 76.4.13 Maintaining a Chain of Patent Applications 2264 CHAPTER 76 PATENTS David A. Burge David A. Burge Co., L.P.A. Cleveland, Ohio Benjamin D. Burge Chips & Technologies, Inc. San Jose, California 76.1 WHAT DOES IT MEAN TO OBTAIN A PATENT Before meaningfully discussing such topics as inventions that qualify for patent protection and pro- cedures that are involved in obtaining a patent, it is necessary to know about such basics as the four different types of patent applications that can be filed, the three different types of patents that can be obtained, and what rights are associated with the grant of a patent. 76.1.1 Utility, Design, and Plant Patents When one speaks of obtaining a patent, it is ordinarily assumed that what is intended is a utility patent. Unless stated otherwise, the discussion of patents presented in this chapter applies only to U.S. patents, and principally to utility patents. Utility patents are granted to protect processes, machines, articles of manufacture, and composi- tions of matter that are new, useful, and unobvious. Design patents are granted to protect the ornamental appearances of articles of manufacture—that is, shapes, configurations, ornamentation, and other appearance-defining characteristics that are new, unobvious, and not dictated primarily by functional considerations. Plant patents are granted to protect new varieties of plants that have been asexually reproduced, with the exception of tuber-propagated plants and those found in an uncultivated state. New varieties of roses and shrubs often are protected by plant patents. Both utility and design patent protections may be obtained on some inventions. A utility patent typically will have claims that define novel combinations of structural features, techniques of man- ufacture, and/or methods of use of a product. A design patent typically will cover outer configuration features that are not essential to the function of the product but rather give the product an esthetically pleasing appearance. Genetically engineered products may qualify for plant patent protection, for utility patent protec- tion, and/or for other protections provided for by statute that differ from patents. Computer software and other computer-related products may qualify for design and/or utility patent protections. These are developing areas of intellectual property law. 76.1.2 Patent Terms and Expiration Plant patents have a normal term of 17 years, measured from the dates these patents were granted (their issue dates}. Design patents that currently are in force have normal terms of 14 years, measured from their issue dates. Prior to a change of law that took effect during 1982, it was impossible for design patent owners to elect shorter terms of 3*/2 or 7 years. Utility patents that expired prior to June 8, 1995, had a normal term of 17 years, measured from their issue dates. Utility patents that (1) were in force on June 8, 1995, or (2) issue from applications that were filed prior to June 8, 1995, have normal terms that expire either 17 years, measured from their issue dates, or 20 years, measured from the filing date of the applications from which these patents issued, whichever is later. Utility patents that issue from applicants that were filed on or after June 8, 1995, have normal terms that expire 20 years from filing. The filing date from which the 20-year measurement is taken to calculate the normal expiration date of a utility patent is the earliest applicable filing date. If, for example, a patent issues from a continuation application, a divisional application or a continuation-in-part application that claims the benefit of the filing date of an earlier filed "parent" application, the 20-year measurement is taken from the filing date of the "parent" application. The normal term of a patent may be shortened due to a variety of circumstances. If, for example, a court of competent jurisdiction should declare that a patent is "invalid," the normal term of the patent will have been brought to an early close. In some instances, a "terminal disclaimer" may have been filed by the owner of a patent to cause early termination. The filing of a terminal disclaimer is 76.5 PATENTPROTECTIONS AVAILABLE ABROAD 2265 76.5.1 Canadian Filing 2265 76.5.2 Foreign Filing in Other Countries 2265 76.5.3 Annual Maintenance Taxes and Working Requirements 2265 76.5.4 Filing under International Convention 2265 76.5.5 Filing on a Country-by- Country Basis 2266 76.5.6 The Patent Cooperation Treaty 2266 76.5.7 The European Patent Convention 2266 76.5.8 Advantages and Disadvantages of International Filing 2266 76.5.9 Trends in International Patent Protection 2267 sometimes required by the Patent and Trademark Office during the examination of an application that is so closely subject-matter-related to an earlier-filled application that there may be a danger that two patents having different expiration dates will issue covering substantially the same invention. 76.1.3 Four Types of Applications Three types of patent applications are well known. A utility application is what one files to obtain a utility patent. A design application is what one files to obtain a design patent. A plant application is what one files to obtain a plant patent. Effective June 8, 1995, it became possible to file one or more provisional applications as a precursor to the filing of a utility application. The filing of a provisional application will not result in the issuance of any kind of patent. In fact, no examination will be made of the merits of the invention described in a provisional application. Examination "on the merits" takes place only if a utility application is filed; and, if examination takes place, it centers on the content of the utility application, not on the content of any provisional applications that are referred to in the utility application. The filing of a provisional application that adequately described an invention will establish a filing date that can be relied on in a later-filed utility application relating to the same invention (1) if the utility application is filed within one year of the filing date of the provisional application and (2) if the utility application makes proper reference to the provisional application. While the filing date of a provisional application can be relied on to establish a reduction to practice of an invention, the filing date of a provisional application does not start the 20-year clock that determines the normal expiration date of a utility patent. Absent the filing of a implant application within one year from the filing date of a provisional application, the Patent and Trademark Office will destroy the provisional application once it has been pending a full year. 76.1.4 Why File a Provisional Application If a provisional application will not be examined and will not result in the issuance of any form of patent whatsoever, why would one want to file a provisional application? Actually there are several reasons why the filing of one or more provisional applications may be advantageous before a full- blown utility application is put on file. If foreign filing rights are to be preserved, it often is necessary for a U.S. application to be filed before any public disclosure is made of an invention so that one or more foreign applications can be filed within one year of the filing date of the U.S. application, with the result that the foreign applications will be afforded the benefit of the filing date of the U.S. application (due to a treaty referred to as the Paris Convention), thereby ensuring that the foreign applications comply with "absolute novelty" requirements of foreign patent law. If the one-year grace period provided by U.S. law (which permits applicants to file a U.S. appli- cation anytime within a full one-year period from the date of the first activity that starts the clock running on the one-year grace period) is about to expire, it may be desirable to file a provisional application rather than a utility application because (1) preparing and filing a provisional application usually can be done less expensively, (2) preparing and filing a provisional application usually can be done more quickly, inasmuch as it usually involves less effort, and (3) everything that one may want to include in a utility application may not have been discerned (i.e., invention development and testing may still be underway), hence it may be desirable to postpone for as much as a full year the drafting and filing of a utility application. If development work is still underway when a first provisional application is filed, and if the result of the development program brings additional invention improvements to light, it may be desirable (during the permitted period of one year between the filing of the first provisional application and the filing of a full-blown utility application) to file one or more additional provisional applica- tions, all of which can be referred to and can have their filing dates relied upon when a utility application is filed within one year, measured from the filing date of the earliest-filed provisional application. 76.1.5 Understanding That a Patent Grants a "Negative Right" It is surprisingly common to find that even those who hold several patents fail to properly understand the "negative" nature of the rights that are embodied in the grant of a patent. What a patent grants is the "negative right" to "exclude others" from making, using, or selling an invention that is covered by the patent. Not included in the grant of a patent is a "positive right" enabling the patent owner to actually make, use, or sell the invention. In fact, a patent owner may be precluded, by the existence of other patents, from making, using, and selling his or her patented invention. Illustrating this often misunderstood concept is the following example, referred to as The Parable of the Chair. If inventor A invents a three-legged stool at an early time when such an invention is not known to others, A's invention may be viewed as being "basic" to the art of seats, probably will be held to be patentable, and the grant of a patent probably will have the practical effect of enabling A both (1) to prevent others from making, using, and selling three-legged stools and (2) to be the only entity who can legally make, use, and sell three-legged stools during the term of A's patent. If, during the term of A's patent, inventor B improves upon A's stool by adding a fourth leg for stability and an upright back for enhanced support and comfort (whereby a chair is born), and if B obtains a patent on his chair invention, the grant of B's chair patent will enable B to prevent others from making, using, and selling four-legged back-carrying seats. However, B's patent will do nothing at all to permit B to make, use, or sell chairs—the problem being that a four-legged seat having a back infringes A's patent because each of B's chairs includes three legs that support a seat, which is what A can exclude others from making, using, or selling. To legally make, use, or sell chairs, B must obtain a license from A. And if, during the terms of the patents granted to A and B, C invents and patents the improvement of providing curved rocking rails that connect with leg bottoms, and arms that connect with the back and seat, thereby bringing into existence a rocking chair, C can exclude others during the term of his patent from making, using, or selling rocking chairs, but must obtain licenses from both A and B in order to make, use, or sell rocking chairs, for a rocking chair includes three legs and a seat and includes four legs, a seat, and a back. Invention improvements may represent very legitimate subject matter for the grant of a patent. However, patents that cover invention improvements may not give the owners of these patents any right at all to make, use, or sell their patented inventions unless licenses are obtained from those who obtained patents on inventions that are more basic in nature. Once the terms of the more basic patents expire, owners of improvement patents then may be able to practice and profit from their inventions on an exclusive basis during the remaining portions of the terms of their patents. 76.2 WHAT CAN BE PATENTED AND BY WHOM For an invention to be patentable, it must meet several requirements set up to ensure that patents are not issued irresponsibly. Some of these standards are complex to understand and apply. Let us sim- plify and summarize the essence of these requirements. 76.2.1 Ideas, Inventions, and Patentable Inventions Invention is a misleading term because it is used in so many different senses. In one, it refers to the act of inventing. In another, it refers to the product of the act of inventing. In still another, the term designates a patentable invention, the implication mistakenly being that if an invention is not pat- entable, it is not an invention. In the context of modern patent law, invention is the conception of a novel and useful contribution followed by its reduction to practice. Conception is the beginning of an invention; it is the creation in the mind of an inventor of a useful means for solving a particular problem. Reduction to practice can be either actual, as when an embodiment of the invention is tested to prove its successful operation under typical conditions of service, or constructive, as when a patent application is filed containing a complete description of the invention. Ideas, per se, are not inventions and are not patentable. They are the tools of inventors, used in the development of inventions. Inventions are patentable only insofar as they meet certain criteria established by law. For an invention to be protectable by the grant of a utility patent, it must satisfy the following conditions: 1. Fit within one of the statutorily recognized classes of patentable subject matter 2. Be the true and original product of the person seeking to patent the invention as its inventor 3. Be new at the time of its invention by the person seeking to patent it 4. Be useful in the sense of having some beneficial use in society 5. Be nonobvious to one of ordinary skill in the art to which the subject matter of the invention pertains at the time of its invention 6. Satisfy certain statutory bars that require the inventor to proceed with due diligence in pur- suing efforts to file and prosecute a patent application 76.2.2 The Requirement of Statutory Subject Matter As stated in the Supreme Court decision of Kewanee Oil v. Bicron Corp., 416 U.S. 470, 181 U.S.P.Q. 673 (1974), no utility patent is available for any discovery, however, useful, novel, and nonobvious, unless it falls within one of the categories of patentable subject matter prescribed by Section 101 of Title 35 of the United States Code. Section 101 makes this process. Whoever invents or discovers a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent therefore, subject to the conditions and requirements of this title. The effect of establishing a series of statutory classes of eligible subject matter has been to limit the pursuit of patent protection to the useful arts. Patents directed to processes, machines, articles of manufacture, and compositions of matter have come to be referred to as utility patents, inasmuch as these statutorily recognized classes encompass the useful arts. Three of the four statutorily recognized classes of eligible subject matter may be thought of as products, namely, machines, manufactures, and compositions of matter. Machine has been interpreted in a relatively broad manner to include a wide variety of mechanisms and mechanical elements. Manufactures is essentially a catch-all term covering products other than machines and compositions of matter. Compositions of matter, another broad term, embraces such elements as new molecules, chemical compounds, mixtures, alloys, and the like. Manufactures and compositions of matter ar- guably include such genetically engineered life forms as are not products of nature. The fourth class, processes, relates to procedures leading to useful results. Subject matter held to be ineligible for patent protection includes printed matter, products of nature, ideas, and scientific principles. Alleged inventions of perpetual motion machines are refused patents. A mixture of ingredients such as foods and medicines cannot be patented unless there is more to the mixture than the mere cumulative effect of its components. So-called patent medicines are seldom patented. While no patent can be issued on an old product despite the fact that it has been found to be derivable through a new process, the new process for producing the product may well be patentable. That a product has been reduced to a purer state than was previously available in the prior art does not render the product patentable, but the process of purification may be patentable. A new use for an old product does not entitle one to obtain product patent protection, but may entitle one to obtain process patent protection, assuming the process meets other statutory requirements. A newly discovered law of nature, regardless of its importance, is not entitled to patent protection. Methods of conducting business and processes that either require a mental step to be performed or depend on aesthetic or emotional reactions have been held not to constitute statutory subject matter. While the requirement of statutory subject matter fails principally within the bounds of 35 U.S.C. 101, other laws also operate to restrict the patenting of certain types of subject matter. For example, several statutes have been passed by Congress affecting patent rights in subject matter relating to atomic energy, aeronautics, and space. Still another statute empowers the Commissioner of Patents and Trademarks to issue secrecy orders regarding patent applications disclosing inventions that might be detrimental to the national security of the United States. The foreign filing of patent applications on inventions made in the United States is prohibited for a brief period of time until a license has been granted by the Commissioner of Patents and Trademarks to permit foreign filing. This prohibition period enables the Patent and Trademark Office to review newly filed applications, locate any containing subject matter that may pose concerns to national security, and, after consulting with other appropriate agencies of government, issue secrecy orders preventing the contents of these applications from being publicly disclosed. If a secrecy order issues, an inventor may be barred from filing applications abroad on penalty of imprisonment for up to two years or a $10,000 fine or both. In the event a patent application is withheld under a secrecy order, the patent owner has a right to recover compensation from the government for damage caused by the secrecy order and/or for the use the government may have made of the invention. Licenses permitting expedited foreign filing are almost always automatically granted by the Patent and Trademark Office at the time of issuing an official filing receipt, which advises the inventor of the filing date and serial number assigned to his or her application. Official filing receipts usually issue within a month of the date of filing and bear a statement attesting to the grant of a foreign filing license. 76.2.3 The Requirement of Originality of Inventorship Under U.S. patent law, only the true and original inventor or inventors may apply to obtain patent protection. If the inventor has derived an invention from any other source or person, he or she is not entitled to apply for or obtain a patent. The laws of our country are strict regarding the naming of the proper inventor or joint inventors in a patent application. When one person acting alone conceives an invention, he or she is the sole inventor and he or she alone must be named as the inventor in a patent application filed on that invention. When a plurality of people contribute to the conception of an invention, these persons must be named as joint inventors if they have contributed to the inventive features that are claimed in a patent application filed on the invention. Joint inventorship occurs when two or more persons collaborate in some fashion, with each contributing to conception. It is not necessary that exactly the same idea should have occurred to each of the collaborators at the same time. Section 116 of Title 35 of the United States Code includes the following provision: Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. Those who may have assisted the inventor or inventors by providing funds or materials for development or by building prototypes are not deemed to be inventors unless they contributed to the conception of the invention. While inventors may have a contractual obligation to assign rights in an invention to their employers, this obligation, absent a contribution to conception, does not entitle a supervisor or an employer to be named as an inventor. When a substantial number of patentable features relating to a single overall development have occurred as the result of different combinations of sole inventors acting independently and/or joint inventors collaborating at different times, the patent law places a burden on the inventors to sort out "who invented what." Patent protection on the overall development must be pursued in the form of a number of separate patent applications, each directed to such patentable aspects of the development as originated with a different inventor or group of inventors. In this respect, U.S. patent practice is unlike that of many foreign countries, where the company for whom all the inventors work is often permitted to file a single patent appli- cation in its own name covering the overall development. Misjoinder of inventors occurs when a person who is not a joint inventor has been named as such in a patent application. Nonjoinder of inventors occurs when there has been a failure to include a person who should have been named as a joint inventor. Misdesignation of inventor ship occurs when none of the true inventors are named in an application. Only in recent years has correction of a misdesignation been permitted. If a problem of misjoinder, nonjoinder, or misdesignation has arisen without deceptive intent, provisions of the patent law permit correction of the error as long as such is pursued with diligence following the discovery. 76.2.4 The Requirement of Novelty Section 101 of Title 35 of the United States Code requires that a patentable invention be new. What is meant by new is defined in Sections 102(a), 102(e), and 102(g). Section 102(a) bars the issuance of a patent on an invention "known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent." Section 102(e) bars the issuance of a patent on an invention "described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or in an international application by another." Section 102(g) bars the issuance of a patent on an invention that "before the applicant's invention thereof . . . was made in this country by another who had not abandoned, suppressed, or concealed it." These novelty requirements amount to negative rules of invention, the effect of which is to prohibit the issuance of a patent on an invention if the invention is not new. The novelty requirements of 35 U.S.C. 102 should not be confused with the statutory bar requirements of 35 U.S.C. 102, which are discussed in Section 16.2.1. A comparison of the novelty and statutory bar requirements of 35 U.S.C. 102 is presented in Table 76.1. The statutory bar requirements are distinguishable from the novelty requirements in that they do not relate to the newness of the invention, but to ways an inventor, who would otherwise have been able to apply for patent protection, has lost that right by tardiness. To understand the novelty requirements of 35 U.S.C. 102, one must understand the concept of anticipation. A claimed invention is anticipated if a single prior art reference contains all the essential elements of the claimed invention. If teachings from more than one reference must be combined to Table 76.1 Summary of the Novelty and Statutory Bar Requirements of 35 U.S.C. 102 Novelty Requirements One may not patent an invention if, prior to its date of invention, the invention was any of the following: 1. Known or used by others in this country. 2. Patented or described in a printed publication in this or a foreign country. 3. Described in a patent granted on an application for patent by another filed in the United States. 4. Made in this country by another who had not abandoned, suppressed, or concealed it. Statutory Bar Requirements One may not patent an invention he or she has previously abandoned. One may not patent an invention if, more than one year prior to the time his or her patent application is filed, the invention was any of the following: 1. Patented or described in a printed publication in this or a foreign country. 2. In public use or on sale in this country. 3. Made the subject of an inventor's certificate in a foregin country. 4. Made the subject of a foreign patent application, which results in the issuance of a foreign patent before an application is filed in this country. show that the claimed combination of elements exists, there is no anticipation, and novelty exists. Combining references to render a claimed invention unpatentable brings into play the nonobviousness requirements of 35 U.S.C. 103, not the novelty requirement of 35 U.S.C. 102. Novelty hinges on anticipation and is a much easier concept to understand and apply than that of nonobviousness. 35 U.S.C. 102(a) Known or Used by Others in This Country Prior to the Applicant's Invention In interpreting whether an invention has been known or used in this country, it has been held that the knowledge must consist of a complete and adequate description of the claimed invention and that this knowledge must be available, in some form, to the public. Prior use of an invention in this country by another will be disabling only if the invention in question has actually been reduced to practice and its use has been accessible to the public in some minimal sense. For a prior use to be disabling under Section 102(a), the use must have been of a complete and operable product or process that has been reduced to practice. 35 U.S.C. 102(a) Described in a Printed Publication in This or a Foreign Country Prior to the Applicant's Invention For a printed publication to constitute a full anticipation of a claimed invention, the printed publication must adequately describe the claimed invention. The description must be such that it enables a person of ordinary skill in the art to which the invention pertains to understand and make the invention. The question of whether a publication has taken place is construed quite liberally by the courts to include almost any act that might legitimately constitute publication. The presence of a single thesis in a college library has been held to constitute publication. Similar liberality has been applied in constru- ing the meaning of the term printed. 35 U.S.C. 102(a) Patented in This or a Foreign Country An invention is not deemed to be novel if it was patented in this country or any foreign country prior to the applicant's date of invention. For a patent to constitute a full anticipation and thereby render an invention unpatentable for lack of novelty, the patent must provide an adequate, operable description of the invention. The standard to be applied under Section 102(a) is whether the patent "describes" a claimed invention. A pending patent application is treated as constituting a "patent" for purposes of applying Section 102(a) as of the date of its issuance. 35 U.S.C. 102(e) Described in a Patent Filed in This Country Prior to the Applicant's Invention Section 102(e) prescribes that if another inventor has applied to protect an invention before you invent the same invention, you cannot patent the invention. The effective date of a U.S. patent, for purposes of a Section 102(e) determination, is the filing date of its application, rather than the date of patent issuance. 35 U.S.C. 102(g) Abandoned, Suppressed, or Concealed For the prior invention of another person to stand as an obstacle to the novelty of one's invention under Section 102(g), the invention made by another must not have been abandoned, suppressed, or concealed. Abandonment, suppression, or concealment may be found when an inventor has been inactive for a significant period of time in pursuing reduction to practice of an invention. This is particularly true when the inventor's becoming active again has been spurred by knowledge of entry into the field of a second inventor. 76.2.5 The Requirement of Utility To comply with the utility requirements of U.S. patent law, an invention must be capable of achieving some minimal useful purpose that is not illegal, immoral, or contrary to public policy. The invention must be operable and capable of being used for some beneficial purpose. The invention does not need to be a commercially successful product in order to satisfy the requirement of utility. While the requirement of utility is ordinarily a fairly easy one to meet, problems do occasionally arise with chemical compounds and processes, particularly in conjunction with various types of drugs. An invention incapable of being used to effect the proposed object of the invention may be held to fail the utility requirement. 76.2.6 The Requirement of Nonobviousness The purpose of the novelty requirements of 35 U.S.C. 102 and the nonobviousness requirement of 35 U.S.C. 103 are the same—to limit the issuance of patents to those innovations that do, in fact, advance the state of the useful arts. While the requirements of novelty and nonobviousness may seem very much alike, the requirement of nonobviousness is a more sweeping one. This requirement maintains that if it would have been obvious (at the time an invention was made) to anyone ordinarily skilled in the art to produce the invention in the manner disclosed, then the invention does not rise to the dignity of a patentable invention and is therefore not entitled to patent protection. The question of nonobviousness must be wrestled with by patent applicants in the event the Patent and Trademark Office rejects some or all their claims based on an assertion that the claimed invention is obvious in view of the teaching of one or a combination of two or more prior art references. When a combination of references is relied on in rejecting a claim, the argument the examiner is making is that it is obvious to combine the teachings of these references to produce the claimed invention. When such a rejection has been made, the burden is on the applicant to establish to the satisfaction of the examiner that the proposed combination of references would not have been obvious to one skilled in the art at the time the invention was made; and/or that, even if the proposed combination of references is appropriate, it still does not teach or suggest the claimed invention. In an effort to ascertain whether a new development is nonobvious, the particular facts and circumstances surrounding the development must be considered and weighed as a whole. While the manner in which an invention was made must not be considered to negate the patentability of an invention, care must be taken to ensure that the question of nonobviousness is judged as of the time the invention was made and in light of the then existing knowledge and state of the art. This test of nonobviousness has been found to be an extremely difficult one for courts to apply. The statutory language prescribing the nonobviousness requirement appears at Title 35, Section 103, stating: A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. In the landmark decision of Graham v. John Deere, 383 U.S.I, 148 U.S.P.Q. 459 (1966), the U.S. Supreme Court held that several basic factual inquiries should be made in determining nonobvious- ness. These inquiries prescribe a four-step procedure or approach for judging nonobviousness. First, the scope and content of the prior art in the relevant field or fields must be ascertained. Second, the level of ordinary skill in the relevant field or fields must be ascertained. Second, the level of ordinary skill in the pertinent art is determined. Third, the differences between the prior art and the claims at issue are examined. Fourth and finally, a determination is made as to whether these differences would have been obvious to one of ordinary skill in the applicable art at the time the invention was made. 76.2.7 Statutory Bar Requirements Despite the fact that an invention may be new, useful, and nonobvious and that it may satisfy the other requirements of the patent law, an inventor can still lose the right to pursue patent protection on the invention unless he or she complies with certain requirements of the law called statutory bars. The statutory bar requirements ensure that inventors will act with diligence in pursuing patent protection. While 35 U.S.C. 102 includes both the novelty and the statutory bar requirements of the law, it intertwines these requirements in a complex way that is easily misinterpreted. The novelty require- ments are basic to a determination of patentability in the same sense as are the requirements of statutory subject matter, originality, and nonobviousness. The statutory bar requirements are not basic to a determination of patentability, but rather operate to decline patent protection to an invention that may have been patentable at one time. Section 102(b) bars the issuance of a patent if an invention was "in public use or on sale" in the United States more than one year prior to the date of the application for a patent. Section 102(c) bars the issuance of a patent if a patent applicant has previously abandoned the invention. Section 102(d) bars the issuance of a patent if the applicant has caused the invention to be first patented in a foreign country and has failed to file an application in the United States within one year after filing for a patent in a foreign country. Table 76.1 summarizes the statutory bar requirements of Section 102. Once an invention has been made, the inventor is under no specific duty to file a patent application within any certain period of time. However, should one of the "triggering" events described in Section 102 occur, regardless of whether this occurrence may have been the result of action taken by the inventor or by actions of others, the inventor must apply for a patent within the prescribed period of time or be barred from obtaining a patent. Some of the events that trigger statutory bar provisions are the patenting of an invention in this or a foreign country; the describing in a printed publication of the invention in this or a foreign country; the public use of the invention in this country; or putting the invention on sale in this country. Some public uses and putting an invention on sale in this country will not trigger statutory bars if these activities were incidental to experimentation. Whether a particular activity amounts to experimental use has been the subject of much judicial dissension. The doctrine of experimental use is a difficult one to apply because of the conflicting decisions issued on this subject. Certainly, the safest approach to take is to file for patent protection well within one year of any event leading to the possibility of any statutory bar coming into play. If foreign patent protections are to be sought, the safest approach is to file an application in this country before any public disclosure is made of the invention. 76.3 PREPARING TO APPLY FOR A PATENT Conducting a patentability search and preparing a patent application are two of the most important stages in efforts to pursue patent protection. This section points out pitfalls to avoid in both stages. 76.3.1 The Patentability Search Conducting a patentability search prior to the preparation of a patent application can be extremely beneficial even when an inventor is convinced that no one has introduced a similar invention into the marketplace. A properly performed patentability study will guide not only the determination of the scope of patent protection to be sought, but also the claim-drafting approaches to be used. In almost every instance, a patent attorney who has at hand the results of a carefully conducted pat- entability study can do a better job of drafting a patent application, thereby helping to ensure that it will be prosecuted smoothly, at minimal expense, through the rigors of examination in the Patent and Trademark Office. Occasionally, a patentability search will indicate that an invention is totally unpatentable. When this is the case, the search will have saved the inventor the cost of preparing and filing a patent application. At times a patentability search turns up one or more newly issued patents that pose infringement concerns. A patentability search is not, however, as extensive a search as is one con- ducted to locate possible infringement concerns when a great deal of money is being invested in a new product. Some reasonable limitation is ordinarily imposed on the scope of a patentability search to keep search costs within a relatively small budget. The usual patentability search covers only U.S. patents and does not extend to foreign patents or to publications. Only the most pertinent Patent and Trade- mark Office subclasses are covered. However, despite the fact that patentability studies are not of exhaustive scope, a carefully conducted patentability search ordinarily can be relied on to give a decent indication of whether an invention is worthy of pursuing patent coverage to protect. Searches do occasionally fail to turn up one or more pertinent references despite the best efforts of a competent searcher. Several reasons explain why a reference may be missed. One is that the files of the Public Search Room of the Patent and Trademark Office are incomplete. The Patent and Trademark Office estimates that as many as 7% of the Search Room references are missing or misfiled. Another reason is that the Public Search Room files do not contain some Patent Office subclasses. The searcher must review these missing subclasses in the "examiners' art," the files of patents used by Patent and Trademark Office examiners, where the examiners are free to remove references and take them to their offices as they see fit. Since most patents are cross-referenced in several subclasses, a careful searcher will try to ensure that the field encompassed by a search extends to enough subclasses that patents are located that should have been found in other subclasses, but were not. 76.3.2 Putting the Invention in Proper Perspective It is vitally important that a client take whatever time is needed to make certain that his or her patent attorney fully understands the character of an invention before the attorney undertakes the preparation of a patent application. The patent attorney should be given an opportunity to talk with those involved in the development effort from which an invention has emerged. He or she should be told what features these people believe are important to protect. Moreover, the basic history of the art to which the invention relates should be described, together with a discussion of the efforts made by others to address the problems solved by the present invention. The client should also convey to his or her patent attorney how the present invention fits into the client's overall scheme of developmental activities. Much can be done in drafting a patent application to lay the groundwork for protection of future developments. Additionally, one's patent attorney needs to know how product liability concerns may arise with regard to the present invention so that state- ments he or she makes in the patent application will not be used to the client's detriment in product liability litigation. Personal injury lawyers have been known to scrutinize the representations made in a manufacturer's patents to find language that will assist in obtaining recoveries for persons injured by patented as well as unpatented inventions of the manufacturer. Before preparation of an application is begun, careful consideration should be given to the scope and type of claims that will be included. In many instances, it is possible to pursue both process and product claims. Also, in many instances, it is possible to present claims approaching the invention from varying viewpoints so different combinations of features can be covered. Frequently, it is pos- sible to couch at least two of the broadest claims in different language so efforts of competitors to design around the claim language will be frustrated. Careful considerations must be given to approaches competitors may take in efforts to design around the claimed invention. The full range of invention equivalents also needs to be taken into account so that claims of appropriate scope will be presented in the patent application. 76.3.3 Preparing the Application A well drafted patent application is a work of art. It should be a readable and understandable teaching document. If it is not, insist that your patent attorney rework the document. A patent application that accurately describes an invention without setting forth the requisite information in a clear and con- vincing format may be legally sufficient, but it does not represent the quality of work a client has the right to expect. A well drafted patent application should include an introductory section that explains accurately, yet interestingly, the background of the invention and the character of the problems that are overcome. It should discuss the closest prior art known to the applicant and should indicate how the invention patentably differs from prior art proposals. It should present a summary of the invention that brings out the major advantages of the invention and explains how prior-art drawbacks are overcome. These elements of a patent application may occupy several typed pages. They constitute an introduction to the remainder of the document. Following this introductory section, the application should present a brief description of such drawings as may accompany the application. Then follows a detailed description of the best mode known to the inventor for carrying out the invention. In the detailed description, one or more preferred embodiments of the invention are described in sufficient detail to enable a person having ordinary skill in the art to which the invention pertains to practice the invention. While some engineering details, such as dimensions, materials of construction, circuit component values, and the like, may be omitted, all details critical to the practice of the invention must be included. If there is any question about the essential character of a detail, prudent practice would dictate its inclusion. The written portion of the application concludes with a series of claims. The claims are the most difficult part of the application to prepare. While the claims tend to be the most confusing part of the application, the applicant should spend enough time wrestling with the claims and/or discussing this section with the patent attorney to make certain that the content of the claims is fully understood. Legal gibberish should be avoided, such as endless uses of the word said. Elements unessential to the practice of the invention should be omitted from the claims. Essential elements should be de- scribed in the broadest possible terms in at least some of the claims so the equivalents of the preferred embodiment of the invention will be covered. The patent application will usually include one or more sheets of drawings and will be accom- panied by a suitable declaration or oath to be signed by the inventor or inventors. The drawings of a patent application should illustrate each feature essential to the practice of the invention and show every feature to which reference is made in the claims. The drawings must comply in size and format with a lengthy set of technical rules promulgated and frequently updated by the Patent and Trademark Office. The preparation of patent drawings is ordinarily best left to an experienced patent draftsperson. If a patent application is prepared properly, it should pave the way for smooth handling of the patent application during its prosecution. If a patent application properly tells the story of the inven- tion, it should constitute a teaching document that will stand on its own and be capable of educating a court regarding the character of the art to which the invention pertains, as well as the import of this invention to that art. Since patent suits are tried before judges who rarely have technical back- grounds, it is important that a patent application make an effort to present the basic features of the invention in terms understandable by those having no technical training. It is unusual for an invention to be so impossibly complex that its basic thrust defies description in fairly simple terms. A patent application is suspect if it wholly fails to set forth, at some point, the pitch of the invention in terms a grade school student can grasp. 76.3.4 Enablement, Best Mode, Description, and Distinctness Requirements Once a patent application has been prepared and is in the hands of the inventor for review, it is important that the inventor keep in mind the enablement, best mode, description, and distinctness requirements of the patent law. The enablement requirement calls for the patent application to present sufficient information to enable a person skilled in the relevant art to make and use the invention. The disclosure presented in the application must be such that it does not require one skilled in the art to experiment to any appreciable degree to practice the invention. The best-mode requirement mandates that an inventor disclose, at the time he or she files a patent application, the best mode he or she then knows about for carrying out or practicing the invention. The description requirement also relates to the descriptive part of a patent application and the support it must provide for any claims that may need to be added after the application has been filed. Even though a patent application may adequately teach how to make and use the subject matter of [...]... clear and convincing 76.4.11 Safeguarding the Original Patent Document The original patent document merits appropriate safeguarding It is printed on heavy bond paper, its pages are fastened together by a blue ribbon, and it bears the Official Seal of the United States Patent and Trademark Office The patent owner should preserve this original document in a safe place as evidence of his or her proprietary... excessive number of separate inventions, whereby the need to petition for reconsideration is a rarity 76.4.9 Double-Patenting Rejections Occasionally, one may receive a rejection based on the doctrine of double patenting This doctrine precludes the issuance of a second patent on the same invention already claimed in a previously issued patent One approach to overcoming a double-patenting rejection is to establish... before the patent issues, the Office mails a notice of issuance, which advises the applicant of the issue date and patent number Once a patent issues, its file history is no longer held secret The several documents that form the complete file history of a patent are referred to collectively as the official file or the file wrapper Upon receipt of a newly issued patent, it should be reviewed with care to... satisfied himself or herself with the content of a proposed patent application, he or she should read carefully the oath or declaration accompanying the application The required content of this formal document recently has been simplified In it the inventor states that he or she 1 Has reviewed and understands the content of the application, including the claims, as amended by any amendment specifically... original document in a safe place as evidence of his or her proprietary interest in the invention If an infringer must be sued, the patent owner may be called on to produce the original letters patent document in court 76.4.12 Continuation, Divisional, and Continuation-in-Part Applications During the pendency of an application, it may be desirable to file either a continuation or a divisional application . art. It should be a readable and understandable teaching document. If it is not, insist that your patent attorney rework the document. A patent application that accurately describes . Double-Patenting Rejections Occasionally, one may receive a rejection based on the doctrine of double patenting. This doctrine precludes the issuance of a second patent on the same invention. by evidence that is clear and convincing. 76.4.11 Safeguarding the Original Patent Document The original patent document merits appropriate safeguarding. It is printed on heavy bond paper,